By Richard Stim, Attorney
The U.S. Patent & Trademark Office ("USPTO") is the federal agency charged with evaluating patent applications and issuing patents. To obtain a patent, you must file an application with the USPTO. The application process can be confusing, and requires some preliminary research.
Before you prepare the application, you must first:
Once you are confident that your invention is a good candidate for patent approval, you are ready to begin the patent application process.
Each patent application filed with the USPTO goes through a rigorous examination process to ensure its completeness and validity. The application is assigned to a "patent examiner" (an employee of the USPTO), who inspects it to make sure that:
You and the examiner will exchange letters or phone calls until you reach an agreement about which parts of your invention the patent will cover, if any. This process typically takes between one and three years.
Do not be discouraged by the examiner's rigorous scrutiny of your application. Virtually no patent application, even if filed by a top-notch patent attorney, gets approved on the first go round. The application is not a "rubber stamp," such as when you submit a passport application or a name-change request. It is a lengthy process.
To reduce the number of problems, however, you need to carefully prepare your application, dotting your i's and crossing those t's. And while you do not necessarily need a patent attorney, the guidance of an expert patent lawyer is something to consider.
The key elements of a patent are:
The specification, with the help of the drawings, explains how to make and use the invention. The claims define the scope or boundaries of the patent. The application must also include an abstract that summarizes the invention.
The specification is constructed of several elements. Collectively, these form a narrative that describes and distinguishes the invention. Every specification must describe the invention so that someone knowledgeable in the field of the invention (medicine, machinery, and so forth) can make and use it without further experimentation.
The specification must also disclose the "best mode" of creating and using the invention. If the inventor knows of a better way (or "best mode" by which) to create the invention and fails to disclose it, that failure could result in the loss of patent rights.
The particular parts of the specification include:
These are detailed statements of exactly what your invention covers. Because the scope of your patent rights are based on what you declare in the claims, they are the most important section of the application.
You will also need to include drawings with your application, if they are necessary for showing how the invention works. Some applications (such as for pure chemicals) do not include a drawing, unless a process can be diagrammed by a flowchart.
Your drawings must illustrate every aspect of the invention specified in the claims. The USPTO has strict requirements for both claims and drawings, so be sure to study other patents in your field to become familiar with the format of these sections. All patent applications must include a drawing if the subject matter permits.
You can file your application with the USPTO by mail or electronically.
To make sure that your documents arrive safely at the USPTO, do the following:
The USPTO will stamp the postcard with a receipt date and an application number. Carefully check the returned card to make sure the USPTO received all the documents you sent.
The PTO has implemented an Electronic Filing System (EFS-Web), which enables patent applications, amendments, and other documents to be filed online.
The EFS-Web represents a considerable improvement though it still requires time to master, as well as time for conversion of documents to Portable Data Format (PDF). If you're filing just one application, it will probably be easier and faster to mail a paper copy to the PTO.
EFS-Web also has some practical advantages. Using it, you can:
If you are ready to begin the patent application process, check out Patent It Yourself by David Pressman (Nolo). This readable book takes you through the entire patent process, providing scrupulously updated information and clear instructions on how to write and file your patent application.